Swarovski Aktiengesellschaft v. Crystal Deal

Case No. D2012-1478

1. The Parties

The Respondent is Crystal Deal of San Jose, California, United States of America (“US” or “USA”).

2. The Domain Name and Registrar

The disputed domain name <swarovski-onsales.com> (the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2012. On July 20, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On July 23, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 25, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on August 27, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is one of the world’s leading producers and retailers of cut crystal, genuine gemstones and created stones. The Complainant has production facilities in 18 countries, directly distributes its products to 42 countries and a presence in more than 120 countries. In 2011, the Complainant’s products were sold in 1,218 boutiques operated by the Complainant and through 1,000 partner-operated boutiques worldwide. In 2011, the Complainant’s approximate worldwide revenue was Euro 2.87 billion.

The Complainant has held trade mark registrations for SWAROVSKI (the “SWAROVSKI Mark”) since at least 1972. It owns at least 5 registrations of the SWAROVSKI Mark in the US, including US Registration No. 934915 (registered on March 30, 1972). The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to its official website, located at “www.swarovski.com”.

The Domain Name <swarovski-onsales.com> was created on June 18, 2012. The Domain Name redirects to a website (“Respondent’s Website”) that advertises for sale various products that are purportedly the Complainant’s, such as “Swarovski Pendants”, “Swarovski Necklaces”, “Swarovski Earrings”, “Swarovski Bracelets”, “Swarovski Bangles”. The Respondent’s Website also contains a statement that the Respondent is able to provide authentic Swarovski products from that site. The statement does not indicate what the relationship is between the Respondent’s Website and the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s SWAROVSKI Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the SWAROVSKI Mark. It owns trademark registrations worldwide for the SWAROVSKI Mark, including in the United States and the European Union.

The Domain Name consists of the SWAROVSKI Mark in its entirety with the addition of the words “on” and “sales”. The term ‘onsale’ gives the impression that Swarovski products are being sold at the Respondent’s Website and may also denote they are being offered at a discount, neither of which in any way diminishes the confusing similarity with the SWAROVSKI Mark. See, e.g.,Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“the disputed domain name contains the generic terms “for” and “sale”, whereas the Complainant’s goods are sold as well online via Complainant’s official websites. Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark”). Previous panels have found that coupling a common word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name, especially a well known mark like the SWAROVSKI Mark, does not negate a finding of confusing similarity but serves to reinforce the similarity. See Swarovski Aktiengesellschaft v. Swarovski AG,
WIPO Case No. D2010-2139.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection or affiliation with Swarovski and has not received any license or consent, express or implied, to use the SWAROVSKI Mark in a domain name or in any other manner. The Respondent has never been known by the Domain Name and has no legitimate interest in the SWAROVSKI Mark or the name “Swarovski”. The Domain Name is being used to advertise purported Swarovski products and the Domain Name misdirects Internet traffic to the Respondent’s Website. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. The Respondent has not used the Domain Name for a bona fide offering of goods and services nor has it made a legitimate noncommercial or fair use of the Domain Name.

The Domain Name was registered and is being used in bad faith. The Respondent has registered the Domain Name in bad faith because it was registered with the knowledge of the Complainant’s rights in the SWAROVSKI Mark. It is inconceivable that the Respondent was unaware of Swarovski’s rights in the SWAROVSKI Mark at the time of registration the Respondent’s Website sells a variety of products under the Swarovski name such as “Swarovski Pendants”, “Swarovski Necklaces”, “Swarovski Earrings”, “Swarovski Bracelets”, “Swarovski Bangles” and more. The Respondent would not have advertised products purporting to be Swarovski products on the Respondent’s Website if it was unaware of Swarovski’s reputation. The Respondent is attempting to attract consumers for commercial gain to the Domain Name by creating confusion among consumers by utilising the SWAROVKI Mark. The Respondent, without valid consent, utilises the SWAROVKI Mark on the Respondent’s Website and offers products identical to or similar to Swarovski products for sale. WIPO Panels have determined that this type of behaviour is indicative of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the SWAROVSKI Mark, having registrations for the word SWAROVSKI as a trade mark.

The Domain Name consists of the SWAROVSKI Mark and the suffix “-onsales”. The words “on sales” are descriptive terms that suggest that a product is either available for sale, or available for sale at a discount. As noted in LEGO Juris A/S v Private, Registration/Dohe Dot,
WIPO Case No. D2003-0602, the addition of a term that is generic or descriptive of the Complainant’s products is likely to produce more confusion since it creates an obvious association with the Complainant. As such the addition of the suffix “-onsales” does not distinguish the Domain Name from the SWAROVSKI Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SWAROVSKI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SWAROVSKI Mark or a mark similar to the SWAROVSKI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.

The Respondent’s website displays the SWAROVSKI Mark. It then uses that mark to sell products that purport to be Swarovski products. In the event that the products sold are not genuine Swarovski products, the Respondent’s use does not amount to a bona fide offering as the Respondent is attempting to attract Internet users to its website who are interested in the Complainant’s genuine products and then offering purported Swarovski products which are not genuine. In the event that the site is selling genuine Swarovski products its use does not amount to a bona fide offering as the site does not accurately and prominently discloses the Respondent’s relationship with the Complainant; see Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No.D2001-0903.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of Complainant. The Domain Name resolves to a website that displays the SWAROVSKI Mark and attempts to sell crystal and jewelry products as those sold by the Complainant. The Respondent’s Website makes multiple references to the Complainant and clearly indicates an awareness of the Complainant and its rights in the SWAROVSKI Mark.

The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.

Furthermore the use of the Domain Name to sell products identical to or similar to the Complainant’s products amounts to use of the Domain Name in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s SWAROVSKI Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under Paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <swarovski-onsales.com> be transferred to the Complainant.